Tuesday, May 10, 2022

The Konda case: availability of provisional applications

From the CAFC

The Board subsequently denied Mr. Konda’s requests for rehearing. It reiterated that under 37 C.F.R. § 1.14(a)(1)(vi), a person who makes a written request and pays the appropriate fee “may be provided” “[a] copy of the application as originally filed” of a provisional application like the ’394 provisional. SAppx. 39 (quoting 37 C.F.R. § 1.14(a)(1)(vi)). The Board also noted that the Manual of Patent Examining Procedure (MPEP) reflected this principle. Id. (quoting MPEP § 103(III) (8th ed., Rev. 7, July 2008)). The Board concluded that a copy of the ’394 provisional “as originally filed” became available as of the publication of the ’756 PCT, regardless of Mr. Konda’s personal consent. SAppx. 39–40.

(...) We review the Board’s legal conclusions de novo and its factual determinations for substantial-evidence support. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “Whether an asserted anticipatory document qualifies as a ‘printed publication’ under [35 U.S.C.] § 102 is a legal conclusion based on underlying factual determinations.” Id. (quoting Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002)). A “printed publication” under the applicable version of § 102(b) must have been publicly available at the pertinent time, and that requirement is met if the document was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, [could have] locate[d] it.” Kyocera Wireless Corp. v. Int’l. Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).

Section 1.14(a) of 37 C.F.R., quoted above, provides that a person may, upon written request and payment of a fee, have access to a copy of an unpublished pending application “as originally filed” if that unpublished pending application was incorporated by reference into an international patent application published in accordance with PCT Article 21(2). It is undisputed that the ’756 PCT was such an international patent application and that it incorporated the ’394 provisional by reference. That language clearly supports the Board’s conclusion here that the ’394 provisional was publicly accessible. And a contrary result is not supported by the next sentence of the regulation (on which Mr. Konda relies). That sentence provides that an inventor’s written authorization is required for provision of access to the “paper file,” but the regulation clearly distinguishes the “paper file” (i.e., the whole file history) from the “application as originally filed.” Under the language of § 1.14(a)(1)(vi), therefore, the ’394 provisional as originally filed was accessible without Mr. Konda’s written authorization in the incorporation-by-reference circumstance delineated, while the complete file history was not.

Monday, May 02, 2022

Antiviral Covid drugs hard to obtain in New Jersey as of May 2, 2022

Somewhat evoking the New Jersey problems with distributing vaccine, the Courier-News on 2 May 2022 noted that antiviral druges are hard to obtain in New Jersey:

As Blondie (as covid) would sing:

One way, or another, I'm gonna find ya, I'm gonna get ya get ya get ya get ya

CAFC tackles "industry skepticism" in "motivation to combine" case in Auris v. Intuitive Surgical

In an IP battle between "heavy-weight" law firms Sidley Austin LLP, (for appellant) and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (for appellee), the appellant Auris Health prevailed against patentee in a "motivation to combine" case. The outcome:

Auris Health, Inc. (“Auris”) petitioned for inter partes review of all five claims of Intuitive Surgical Operations, Inc.’s (“Intuitive”) U.S. Patent No. 8,142,447 (“the ’447 patent”). In its final written decision, the Patent Trial and Appeal Board (“Board”) determined that Auris failed to demonstrate that the claims were unpatentable as obvious. Auris Health, Inc. v. Intuitive Surgical Operations, Inc., No. IPR2019-01533, Paper 45, 2021 WL 826396 (P.T.A.B. Mar. 3, 2021) (“Final Written Decision”). Although the Board agreed with Auris that its combination of two references disclosed every limitation of the challenged claims, the Board concluded that a skilled artisan wouldn’t have been motivated to combine those references. Auris appeals. Because the Board impermissibly rested its motivation-to-combine finding on evidence of general skepticism about the field of invention, we vacate and remand.

The CAFC framed the issue:

Before the Board, Auris argued that a skilled artisan would be motivated to combine Smith and Faraz to decrease the number of assistants needed during surgery by roboticizing some of their tasks. Intuitive responded that a skilled artisan wouldn’t have been motivated to combine the references because “surgeons were skeptical about performing robotic surgery in the first place, [so] there would have been no reason to further complicate Smith’s already complex robotic surgical system with [Faraz’s] roboticized surgical stand.” Final Written Decision, 2021 WL 826396, at *7–8. The Board agreed with Intuitive and concluded that “the evidence . . . supports the position [that] there is no motivation to complicate Smith’s system when there is skepticism at the time of the invention for using robotic systems during surgery in the first place.” Id. at *9. On appeal, Auris challenges the Board’s reliance on general skepticism about the field of robotic surgery to find a lack of motivation to combine. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

The majority of two made short work of the argument

The motivation-to-combine inquiry asks whether a skilled artisan “not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted). As to the “would have” question, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). It follows that generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine.

To be sure, evidence of industry skepticism may play a role in an obviousness inquiry—but as a secondary consideration in a significantly different context. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1335–36 (Fed. Cir. 2016). Yet even then, the evidence of skepticism must be specific to the invention, not generic to the field. Id. Although Intuitive suggests that the Board may consider generic industry skepticism in a motivation-to-combine analysis to “place [itself] in the minds of” skilled artisans, Appellee’s Br. 40–41 (citing Interconnect Plan. Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)), it offers no case law to suggest that the Board can rely on generic industry skepticism to find a lack of motivation to combine. And while specific evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of motivation to combine, that’s not what we have here.

Judge Reyna in dissent, in effect, raises the issue that the facts underlying "motivation to combine" are evaluated by a "substantial evidence" standard, and that, here, a reasonable mind could accept that general industry skepticism foreclosed motivation to combine. The "negative pressure" wound healing case of Kinetic Concepts was cited by Judge Reyna. The question remains: is motivation to combine a legal issue or a factual issue?

Judge Reyna writes:

I respectfully dissent. In my view, the Board’s determination that Auris failed to show a motivation to combine is adequately supported by substantial evidence and was not contrary to our law on obviousness. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“We review the Board’s legal conclusion of obviousness de novo, and underlying factual findings for substantial evidence.”); Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938) (Substantial evidence “means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”).

I am also concerned that the majority opinion may reasonably be understood to announce an inflexible and rigid rule, namely that it is “impermissible” for the Board to consider evidence of artisans’ skepticism toward robotic surgery in determining motivation to combine. I find no authority for this assertion, and indeed it appears in tension, at a minimum, with the central thrust of KSR. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (rejecting the “rigid approach of the Court of Appeals” and articulating an “expansive and flexible approach” of determining obviousness). This is particularly true when considering art in fields of endeavor that are inherently dangerous or risky. Indeed, in past cases, this court has accounted for the attitudes of medical professionals toward certain types of procedures when determining whether a motivation to combine has been adequately demonstrated. See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (finding no motivation to combine where “doctors were not using the disclosed devices and methods to heal wounds with negative pressure because they did not believe that these devices were capable of such healing”).
(...) I recognize that the majority states that skepticism “may play a role in an obviousness inquiry—but as a secondary consideration.” Maj. Op. 5. But this assertion suggests, to some extent, that objective indicia are less important or less probative of obviousness or non-obviousness than the other Graham factors. The majority cites no case in which this court has endorsed that view, and in fact that view appears inconsistent with a number of our opinions. See, e.g., Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc) (“A determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of obviousness until all those factors are considered.”); Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996) (“It is the secondary considerations that are often most probative and determinative of the ultimate conclusion of obviousness or nonobviousness. The district court did not provide reasons for apparently discounting Pro-Mold’s evidence of secondary considerations; that was error as a matter of law.”); Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012) (“These objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight.”). In sum, the majority overlooks multiple reasons why the Board found the proffered motivation to combine insufficient. It also announces a new legal principle that I believe conflicts with KSR and its progeny. For these reasons, I dissent.

Thursday, April 28, 2022

Mixed decision in Nichia vs. Document Security Systems

From the Nichia case:

Here, it was Nichia’s burden to demonstrate Takenaka disclosed the required electrical connection. See, e.g., Harmonic, 815 F.3d at 1363; Ariosa Diagnostics, 805 F.3d at 1367. Unlike with the plastic phrase, Nichia’s petition specifically stated that Takenaka disclosed an electrical connection. In discussing claim 15, the petition cites to Section VI.D.1., which discusses grounds for unpatentability of claim 1 based on Takenaka. J.A. 177–79. The petition quotes Takenaka’s description of how the leads are connected. “LED chip 4 is mounted on first lead frame 1 with Ag paste 7 therebetween. Bonding wire 5 is attached to second lead frame 2. Accordingly, second lead frame 2 is mechanically and electrically connected to LED chip 4.” J.A. 163–64 (emphasis added). This shows Takenaka discloses an LED die electrically connected to a conductive lead. Thus, Nichia demonstrated with particularity that this claim limitation is disclosed in the prior art. The Board’s conclusion to the contrary demonstrates a clearly erroneous fact finding qualifying as an abuse of discretion.

Wednesday, April 20, 2022


The outcome did not go well for the Board

This is a patent case involving lighted artificial trees. Polygroup Limited MCO appeals from the final written decision of the Patent Trial and Appeal Board in an inter partes review upholding the patentability of claims 7, 10, 11, 16, 18–22, 25, 26, and 28 of U.S. Patent No. 8,454,186 and claims 1–3, 5–9, 11, 12, 14, and 15 of U.S. Patent No. 8,454,187. With respect to every claim except claim 7 of the ’186 patent, we reverse the Board’s determination that Polygroup failed to establish the unpatentability of the challenged claims. We conclude that the Board applied erroneous claim constructions and that, under the proper constructions, Miller teaches every limitation of claims 10, 11, 16, 18–22, 25, 26, and 28 of the ’186 patent and claims 1–3, 5–9, 11, 12, 14, and 15 of the ’187 patent. Polygroup has, therefore, established that these claims are unpatentable. For claim 7 of the ’186 patent, the Board exceeded the scope of our remand when it considered a combination of Miller and Lessner. We therefore vacate and remand its decision with regard to claim 7 of the ’186 patent.

Tuesday, April 19, 2022

Rovi prevails over Comcast

The outcome was reversal:

Rovi appeals from an inter partes review final written decision. See Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., No. IPR2019-00231, 2020 WL 2305288, (P.T.A.B. May 8, 2020) (Board Decision). In that decision, the Patent Trial and Appeal Board held that all claims of U.S. Patent No. 9,369,741 would have been obvious over Sie1 alone or in combination with other references. For the following reasons, we reverse.

Of the prior art [Sie]

That step occurs, if at all, before the system determines whether subscription playback is authorized for a user (step 744), whether to provide a user with promotional access (step 748), and whether to provide a user with free access (step 752). Put simply, the notification service precedes any determination of availability to a specific user. But the claim language requires the indication (i.e., the notification) to be based on a determination of availability to a specific user. Thus, no reasonable finder of fact could find Sie teaches the available-to-a-user limitation. And the Board erred in holding claim 1 would have been obvious based on a finding to the contrary.

Intel loses at CAFC

The short decision:

Intel Corporation appeals from an inter partes review final written decision. See Intel Corp. v. XMTT, Inc., No. IPR2020-00145, 2021 WL 1895938 (P.T.A.B. May 11, 2021) (Board Decision). In that decision, the Patent Trial and Appeal Board held that no claim of U.S. Patent No. 7,707,388 would have been obvious over Nakaya1 in combination with other references. For the following reasons, we affirm.

Intel is judicially estopped from raising its claim construction argument. The Board adopted the claim construction for which Intel advocated. Board Decision, 2021 WL 1895938, at *4–5. Yet, Intel now changes its position and advocates for a claim construction that is clearly inconsistent with its position before the Board. Compare Appellant’s Br. 36–37, with J.A. 685–86. Intel is judicially estopped from raising this argument. We need not consider Intel’s argument that Nakaya discloses the disputed claim limitations under its new construction. Further, the Board did not violate Intel’s due process rights. Even if Intel was entitled to an opportunity to respond to the Board’s claim construction, the Board provided one. It allowed supplemental briefing for the express purpose of addressing its proposed claim construction. J.A. 591–95. Thus, there was no due process violation.

WWikipedia notes of "judicial estoppel:"

it is generally agreed that it can only be cited if the party in question successfully maintained its position in the earlier proceedings and benefited from it.

CAFC does personal jurisdiction in a reprise of "The Good, the Bad. and the Ugly, with Apple as Tuco and Zipit as the one armed man

In the Good, the Bad and Ugly:

One Armed Man: I've been looking for you for 8 months. Whenever I should have had a gun in my right hand, I thought of you. Now I find you in exactly the position that suits me. I had lots of time to learn to shoot with my left. [Tuco, in s bath tub with lots of bubbles, kills him with the gun he has hidden in the foam.]

Tuco: When you have to shoot, shoot, don't talk.

In the background of this CAFC case. Zipit talked and talked with Apple, but it was Apple who "shot" Zipit with a declaratory judgment action. The case:

Apple Inc. appeals from a judgment of the U.S. District Court for the Northern District of California dismissing its complaint for declaratory judgment of noninfringement against Zipit Wireless, Inc. for lack of personal jurisdiction. The district court held that it would be unreasonable to exercise personal jurisdiction over Zipit based on the nature of Zipit’s communications with Apple in the Northern District. Specifically, the district court read our precedent as applying a bright-line rule that patent infringement notice letters and related communications can never form the basis for personal jurisdiction. We agree with Apple that the district court erred in this regard. Guided by the Supreme Court and our own precedent, we conclude, as the district court likely would have absent its erroneous interpretation of our precedent, that Zipit is subject to specific personal jurisdiction in the Northern District of California for purposes of Apple’s declaratory judgment action. We therefore reverse the judgment dismissing Apple’s declaratory judgment complaint and remand for further proceedings. Background Zipit is a Delaware corporation with a principal place of business in Greenville, South Carolina, and with each of its fourteen employees located in South Carolina. Zipit is the assignee of U.S. Patent Nos. 7,292,870 and 7,894,837 (collectively, the “patents-in-suit”), which are generally directed to wireless instant messaging devices that use Wi-Fi to send and receive instant messages. (...) Zipit moved to dismiss Apple’s complaint for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2). On February 12, 2021, the district court granted Zipit’s motion, holding that it lacked specific personal jurisdiction over Zipit (general jurisdiction was not asserted). Apple Inc. v. Zipit Wireless, Inc., Case No. 5:20- cv-04448-EJD, 2021 WL 533754 (N.D. Cal. Feb. 12, 2021) (Judgment Op.). The court concluded that Apple had established the requisite minimum contacts, highlighting that Zipit sent “multiple letters and claim charts accusing Apple of patent infringement” and in fact had “travel[ed] to Apple’s offices in California to discuss these accusations.” Id. at *3. This, the court determined, made the exercise of specific personal jurisdiction over Zipit “presumptively reasonable.” Id. (quoting Xilinx, Inc. v. Papst Licensing GmbH & Co., 848 F.3d 1346, 1356 (Fed. Cir. 2017)). The court then analyzed whether Zipit had established a “compelling case” that the exercise of jurisdiction would be unreasonable. After analyzing each of the factors set forth in Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475–77 (1985), the court concluded that Zipit had not done so. Judgment Op., 2021 WL 533754, at *3–4. Specifically, the court found that “the majority of [the] reasonableness factors weigh in favor of adjudicating in California or, at the least, do not weigh significantly in favor of either party,” and therefore jurisdiction over Zipit would not be unreasonable. Id. at *4. The court went on to explain, however, that the Federal Circuit has held that “the exercise of personal jurisdiction . . . would be unconstitutional when ‘[a]ll of the contacts were for the purpose of warning against infringement or negotiating license agreements, and [the defendant] lacked a binding obligation in the forum.’” Id. (alterations in original) (quoting Levita Magnetics Int’l Corp. v. Attractive Surgical, LLC, Case No. 19-cv-04065-JSW, 2020 WL 4580504, at *6 (N.D. Cal. Apr. 1, 2020), which in turn quotes Breckenridge Pharm., Inc. v. Metabolite Lab’ys, Inc., 444 F.3d 1356, 1364 (Fed. Cir. 2006)). The court thus determined that the exercise of jurisdiction over Zipit would be unreasonable because of “Zipit’s lack of binding obligations tying it to California and because Zipit’s contacts with California all related to the attempted resolution of the status of” the patents-in-suit, i.e., “for the purpose of warning against infringement.” Id. at *4. Accordingly, despite determining that Apple had established that minimum contacts existed with the Northern District of California and that Zipit had not shown the exercise of jurisdiction would be unreasonable under Supreme Court precedent, the district court dismissed Apple’s declaratory judgment action for lack of jurisdiction. Apple appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). The sole issue in this case is whether the district court erred in dismissing Apple’s declaratory judgment action for lack of specific personal jurisdiction over Zipit. “Personal jurisdiction is a question of law that we review de novo.” Xilinx, 848 F.3d at 1352 (quoting Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016 (Fed. Cir. 2009)). In reviewing a Rule 12(b)(2) dismissal for lack of personal jurisdiction, we “accept the uncontroverted allegations in [Apple’s] complaint as true and resolve any factual conflicts in the affidavits in [Apple’s] favor.” Id. (quoting Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1329 (Fed. Cir. 2008)); see also Marvix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218, 1223 (9th Cir. 2011). “[F]oreseeability . . . is critical to due process analysis,” and the Supreme Court has made clear that the focus is on whether a given defendant’s “conduct and connection with the forum State are such that he should reasonably anticipate being haled into court there.” Burger King, 471 U.S. at 474 (quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980)). The Supreme Court has outlined three factors relevant to specific personal jurisdiction. In ascertaining whether the exercise of specific personal jurisdiction is appropriate in a given case, we consider: (1) whether the defendant “purposefully directed” its activities at residents of the forum; and (2) whether the claim “arise[s] out of or relate[s] to” the defendant’s activities within the forum. Id. at 472–73 (first quoting Keeton v. Hustler Mag., Inc., 465 U.S. 770, 774 (1984); and then quoting Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414 (1984)); see also Jack Henry & Assocs., Inc. v. Plano Encryption Techs. LLC, 910 F.3d 1199, 1204 (Fed. Cir. 2018). We also consider (3) whether assertion of personal jurisdiction is reasonable and fair. World-Wide Volkswagen, 444 U.S. at 291–92; see also Burger King, 471 U.S. at 476–78; Jack Henry, 910 F.3d at 1204. (...) Having determined that Zipit purposefully directed its activities at California, we now consider whether Zipit has “present[ed] a compelling case that the presence of some other considerations would render jurisdiction unreasonable.” Burger King, 471 U.S. at 477. For the reasons below, we conclude that Zipit has not done so. We begin by addressing an error in the district court’s determination that the exercise of jurisdiction would be unreasonable. After analyzing and weighing each of the Burger King factors, the court initially determined that Zipit had not shown that the exercise of jurisdiction would be unreasonable. It went on, however, to conclude that it would be unreasonable to exercise jurisdiction over Zipit under our court’s precedent solely because “Zipit’s contacts with California all related to the attempted resolution of the status of” the patents-in-suit, i.e., “for the purpose of warning against infringement.” Judgment Op., 2021 WL 533754, at *4. This was error. As we explained most recently in Trimble, “there is no general rule that demand letters can never create specific personal jurisdiction.” 997 F.3d at 1156. (...) In this case, the district court, not having the benefit of our recent decision in Trimble, erred by not considering the settlement-promoting policy underlying Red Wing Shoe as but one of many considerations in its overall analysis of the Burger King factors. See Trimble, 997 F.3d at 1157–59 (considering this policy alongside the other Burger King factors). Specifically, the district court erred in reading our precedent as creating a bright-line rule that communications directed to “the attempted resolution” of the parties’ dispute regarding the patents-in-suit trumps all other considerations of fairness and reasonableness. Although some of our earlier precedent relying on Red Wing Shoe suggests that there is such a bright-line rule, see, e.g., Avocent, 552 F.3d at 1340; Breckenridge, 444 F.3d at 1362; Silent Drive, 326 F.3d at 1206, Supreme Court precedent (both pre- and post-Red Wing Shoe) has made clear that jurisdictional inquiries cannot rest on such bright-line rules— there are no “talismanic jurisdictional formulas.” Burger King, 471 U.S. at 485. Rather, “‘the facts of each case must [always] be weighed’ in determining whether personal jurisdiction would comport with ‘fair play and substantial justice.’” Id. at 485–86 (alteration in original) (quoting Kulko v. Superior Ct. of Cal., 436 U.S. 84, 92 (1978)); Bristol-Myers Squibb, 137 S. Ct. at 1780 (“In determining whether personal jurisdiction is present, a court must consider a variety of interests.”). (...) Finally, Zipit suggests in its appeal brief that it could not have foreseen being haled into court in California because four years lapsed between its last contact with Apple in California (2016) and Apple’s filing of its declaratory judgment action (2020). See Appellee’s Br. 2–3, 25–26. But Zipit’s argument skips over an important point—it is Zipit who reignited the parties’ contacts by filing suit for patent infringement in Georgia in 2020. After moving to dismiss its action in Georgia without prejudice, Zipit cannot credibly assert that it could not have reasonably foreseen that Apple would respond in kind by filing a declaratory judgment claim, and that it would do so in its home state of California given Zipit’s earlier contacts with the forum state. However stale Zipit’s contacts might have become absent intervening action by Zipit, they were ripe when Apple filed its declaratory judgment action. Turning to the second factor—California’s interest in adjudicating the underlying patent infringement dispute— we have previously recognized that California has “definite and well-defined interests in commerce and scientific development,” and that it has “a substantial interest in protecting its residents from unwarranted claims of patent infringement.” Xilinx, 848 F.3d at 1356 (first quoting Viam Corp. v. Iowa Exp.-Imp. Trading Co., 84 F.3d 424, 430 (Fed. Cir. 1996); and then quoting Elecs. for Imaging, 340 F.3d at 1352)); accord Trimble, 997 F.3d at 1158; see McGee v. Int’l Life Ins. Co., 355 U.S. 220, 223 (1957) (explaining that states have “a manifest interest in providing effective means of redress for [their] residents”). Zipit does not dispute that California has such an interest. See Appellee’s Br. 34.

Monday, April 11, 2022

Florida in the Civil War

The anniversary of the Battle of Shiloh, April 6-7, 1862, has passed. Grant made a name for himself on April 7, 1862.

Meanwhile, at the time, Robert E. Lee had no field command. Starting in March 1862, Lee was advisor to President Davis.

Prior to the advisor position, on November 5, 1861, the "coasts of South Carolina, Georgia, and East Florida" were "constituted a military department." Lee was assigned to this new and undermanned command, Lee's headquarters were at Coosawatchie, SC.

In January 1862, Lee went as far as Fernandina, FL.

Another Florida connection is Lincoln conspirator Lewis Payne/Powell. He fought in a Florida infantry regiment at Gettysburg. He was captured, hospitalized, but managned to escape. His skull is buried in Lake Geneva, FL.

Coincidence in time?

On 3 April 2022, CBS Sunday Morning did a piece on Ann-Marget , including her break-out role as "Kim MacAfee" in the movie Bye Bye Birdie. On 5 April 2022, Ann-Margret's co-star in Bye Bye Birdie, Bobby Rydell ("Hugo Peabody"), died. In the movie, toward the end, as Conrad Birdie is about to kiss Kim (Ann-Marget), Hugo runs onstage and punches him out on the live telecast of the Ed Sullivan Show. Sound familiar? And don't forget Dick van Dyke ("Albert Peterson") is a chemist with a hot invention (that gets introduced on the Ed Sullivan Show). And the Russians are villains in the movie. Sound familiar?

UPDATE entered 19 April

Bye Bye Birdie still remmembered

Saturday, April 02, 2022

CAFC issues mixed decision in Microsoft vs. IPA

The outcome of Microsoft vs. IPA

Microsoft and IPA both appeal. As to Microsoft’s appeals: We affirm the Board’s determination of no proven unpatentability of claims 29–47 of the ’115 patent and claims 50–51 and 53–55 of the ’560 patent; but we reverse certain Board findings regarding claims 8–10, 63, and 86– 89 of the ’115 patent and claims 10–11 and 28 of the ’560 patent, and we remand for any further proceedings that may be necessary and appropriate to address those claims. As to IPA’s appeals (including cross-appeals): We affirm all of the Board’s determinations challenged here by IPA.

The legal standards:

Microsoft presents five arguments on appeal. We review the Board’s legal conclusions (including claim constructions based solely on intrinsic evidence) de novo and its factual findings (including those concerning the prior art’s teachings and the motivation to combine) for substantial-evidence support. Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018); Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015). Substantial evidence exists if “‘a reasonable fact finder could have arrived at the agency’s decision’” in light of the record as a whole. Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016) (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). We review the Board’s judgments concerning what arguments have been adequately presented in a petition and other pleadings for abuse of discretion. See Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018); Altaire Pharms., Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274, 1284 (Fed. Cir. 2018), remand order modified by stipulation, 738 F. App’x 1017 (Fed. Cir. 2018); Intelligent Bio-Systems, 821 F.3d at 1367; see also MModal LLC v. Nuance Commc’ns, Inc., 846 F. App’x 900, 906 (Fed. Cir. 2021). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Intelligent BioSystems, 821 F.3d at 1367 (citation omitted).

First argument of Microsoft

Microsoft’s first argument on appeal is that, for claims 8–10 and 63 of the ’115 patent and for claim 28 of the ’560 patent, the Board erred in finding that Microsoft had not proven how or why Kiss and FIPA97 would have been combined by a relevant artisan. Microsoft Opening Br. 49–57. Claims 8 and 9 of the ’115 patent, which are representative for purposes of this issue, read: 8. A computer-implemented method as recited in claim 5 wherein the agent registry data structure includes at least one trigger declaration for one active agent. 9. A computer-implemented method as recited in claim 5 wherein the agent registry data structure includes at least one task declaration, and process characteristics for each active agent. ’115 patent, col. 30, lines 10–16 (emphases added). For context, the undisputed interpretation of “trigger” adopted by the Board is “a general mechanism for requesting some action be taken when one or more conditions is met.” Microsoft Corp. v. IPA Techs. Inc., No. IPR2019-00810, 2020 WL 6110974, at *50 (P.T.A.B. Oct. 15, 2020) (IPR810 Decision)
(...) Concerning how Kiss and FIPA97’s registries would be combined, Microsoft presented evidence, with little elaboration for what Microsoft said a skilled artisan would know how to do. See, e.g., J.A. 1423–26; J.A. 7227–29, 7240 (Lieberman Decl. ¶¶ 217–19, 228). IPA’s response, which focused almost entirely on the why questionb, was at most a simple, unelaborated assertion that Microsoft’s evidence as to how was not enough, with no identification at all of what necessary details were missing. See, e.g., J.A. 1865–67 (objecting to why, not how, the combination would be made); J.A. 4846–48 (making single-sentence assertion about the how issue); J.A. 12861 (Medvidovic Decl. ¶ 261) (same). The Board, for its part, did not meaningfully address the how issue separately from the why issue. It did not identify any concrete unanswered questions about how to achieve the combination (which is not a matter of bodily incorporation, but of combining the features required to arrive at the claim). It did not even say whether the combination required more than simply adding one more field to Kiss’s registry data structure. In these circumstances, we see no basis for a reasonable determination rejecting Microsoft’s evidence of why and how the combination at issue would be made. Accordingly, we reverse the Board’s finding that Microsoft has not persuasively shown how or why Kiss and FIPA97 would have been combined to generate the subject matter of claims 8– 10 and 63 of the ’115 patent and claim 28 of the ’560 patent.

Second argument of Microsoft

Microsoft’s second argument on appeal is that, for claims 29–47 of the ’115 patent, the Board erred in finding the petition insufficient. Microsoft Opening Br. 57–64. Claim 29, which is representative for this issue, is reproduced below, as is claim 1, (...)

We affirm the Board’s determination that Microsoft insufficiently pleaded the unpatentability of claims 29–47. Microsoft’s petition did not grapple with the claim 29 language, simply stating “Kiss/FIPA97 satisfies this claim for the reasons stated in” the section pertaining to the claim 1 limitation “constructing a goal satisfaction plan.” J.A. 1464. That statement is true, however, only if there are no differences between the claims that might affect the Kiss and FIPA97 combination’s disclosure. Yet that central, necessary premise is one that Microsoft wholly failed to defend in its petition, even though there are potentially meaningful differences in claim language that warrant discussion

Of note

The Board’s failure to consider Microsoft’s discussion of the claim 86 preamble, which expressly fills the hole the Board identified in the petition, and the Board’s resulting misapprehension of the purpose of the cross-reference, was error. Although IPA relies on Microsoft Corp. v. FG SRC, LLC, to argue otherwise, see IPA Opening & Response Br. 72–74, that case does not help IPA because it involved something quite different from this case—a Board refusal to “deduce the existence of an obviousness argument from within [a petition’s] anticipation argument,” 860 F. App’x 708, 713 (Fed. Cir. 2021).

Of Microsoft's fifth argument

We affirm that determination, and thus we do not reach the parties’ dispute concerning the proper construction of “computer process.” We need not address whether Microsoft’s petition was adequate because it was readily apparent how FIPA97’s Figure 2 meets the claim requirement that each of the plurality of agent registries is resident within a separate computer process. This is so because Microsoft’s opening brief in this court provided no coherent explanation of why this part of the Board’s decision was incorrect. See Microsoft Opening Br. 76–79. Its effort to do so with a new explanation in its reply brief was too late. See Microsoft Response & Reply Br. 17–18; Amhil Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1564 (Fed. Cir. 1996) (“A reply brief, which should ‘reply to the brief of the appellee,’ is not the appropriate place to raise, for the first time, an issue for appellate review.” (quoting Fed. R. App. P. 28(c))). For those reasons, we affirm the Board’s unpatentability determinations for claims 50–51 and 53–55 of the ’560 patent in IPR2019-00836.